Tag Archives: IIPRD

First Symposium of IIPRD in 2017

After successfully conducting several symposiums in 2016, IIPRD is coming up with one-day seminar on software and electronics patent portfolio with focus on preliminary preparation, prosecution, and litigation in India and US.  While the programme is being organized in Pune on February 23, the one in Bengaluru will be hosted February 24.

The seminar is being arranged by IIPRD along with Khurana and Khurana, Advocates and IP Attorneys and Sughrue Mion.

With speakers like Chid Iyer-partner of International Law Firm of Sughrue Mion, Anubhav Kapoor-Tata Technologies’ General Counsel and Company Secretary, Vinod Khurana-Senior Partner at IIPRD and Khurana & Khurana, IP Attorneys, Irfan Modi-Senior IP Law Attorney at IBM India, Subhadip Sarkar- Senior Director and manages Intellectual Property at Cognizant Technology Solutions, Mr. R. Lakshminarayanan- Head of Intellectual Property Rights (IPR) Management in Samsung R&D India, Mr. Ajay Panwar- having 11 years of experience in the field of IP with domain expertise in software and electronics, Tarun Khurana- having over 14 years of experience in a broad range of IP subject matters, and Co-Founding Partner and Patent Attorney of Khurana & Khurana, Abhishek Pandurangi- partner at Khurana & Khurana, having over a stretch of 7 years as an IP practitioner, entrepreneur, legal expert and a trainer, one cannot afford to miss same. This event turns out to be great opportunity for IP Groups, R&D experts, In-House IP/Legal Counsels, Patent Agents & Attorneys in the field of Practice, Patent Litigators, and Professionals in Legal Domain related to Software,Information Technology, Instrumentation, Electronics, Electrical, Embedded, Mobile Technology, IoT, and Telecom Domains.

Fee per delegate is INR 5,000 for Indians and is INR 10,000 for foreign applicants.

For more details about profiles of partners, programme outline, speakers, why and how to apply, please see http://www.iiprd.com/iiprd-symposium-23rd-february-2017-24th-february-2017/.

NPDC Supplementary Details

Patents are a major area of business proficiency nowadays and recently in India too, it has become as important as marketing, finance, corporate governance, and manufacturing economics. India’s growing R&D operations have taken a beating due to lack of in-house professionals to file patents applications. Even then, the numbers clearly indicate that there is a great deal of patenting activity going on among companies across India. Patent Specification, besides being the most important document in the entire patent registration procedure, is also considered to be one of the most complex Techno-Legal documents. Drafting of Patent Specification is a device of great importance and thus should not be left to a layman to design it. It is extremely important to use carefully selected language to describe an invention to satisfy requirements both in legal terms as well as in technical terms. Selection of the right words may prove tricky when the draft-person is an amateur. Unclear and indefinite languages used in the specification are always likely to draw competitors, or any person concerned to invalidate or oppose the patent or the patent application. And not only is the language significant, satisfying the requirements of patentability is equally vital.

And here is exactly where the National Patent Drafting Competition (NPDC) plays a crucial role in bringing greater awareness and respect for Patents in a coveted and competitive way. NPDC through its nationwide reach will aim to promote development of Patent Drafting as a Skill Set, encouraging more and more technical people to take up Patent Drafting as a Professional Competency and also identifying and honoring Top Patent Drafters in the Country. This initiative of NPDC comes with an earnest effort by IIPRD, its associates, leading sister Law Firm, Khurana & Khurana IP and Attorneys (K&K) and Sughrue Mion. Other partners serving us in this endeavour are TIFAC, PAAI, Spicy IP, IBLJ and Lex Witness.

NPDC commences on 1st of September 2015, when IIPRD and K&K will put forth on their respective websites (www.iiprd.com and www.khuranaandkhurana.com) three invention disclosures, one each in three different domains (Electronics/ Hi-Tech, Mechanical and Chemistry/Pharmaceuticals). The NPDC will be active till 20th September 2015, within which timeframe, Eligible Participants would need to write Complete Patent Specifications (along with Drawings, if applicable) which complies with the Indian Patent Act. Please note that one participant can file only one Patent Specification which will be one domain of his choice.

Complete details of the modus-operandi of the Competition can also be seen here.

Any Practitioner having a Technical/Science Background is eligible to participate in the Competition. So for instance, the Participant could be a student, a practicing Attorney, an in-house counsel, a scientist, a faculty, or any other stakeholder having a technical qualification.

In order to make sure only serious participants submit their Specifications, a Participation Fees of Rs. 1000/- is to be submitted by each Participant, which can either be paid by means of Bank Transfer (Bank Name: IIPRD, Account No. 19620210002476, UCO Bank, Greater Noida Branch, IFSC Code: UCBA0001962) or through Cheque/DD in favor of “IIPRD”. The Draft should reach IIPRD’s Office (E-13, UPSIDC Site IV, Behind Grand Venice, Greater Noida, 201310) by 20th September 2015. Each fee submission must be accompanied with the correct Name, Address, and Contact Details of the Participant so that Participation Certificate can be sent at the given Address to Each Participant.

Drafted Patent Specifications can either be sent to competition@iiprd.com or can be sent in Hard Copy to Physical Office of IIPRD, which is at “E-13, UPSIDC Site IV, Behind Grand Venice, Greater Noida”. In either of the ways, the Patent Specification Draft must be received by IIPRD on or before 20th September 2015.

Evaluation of the Drafts would be done collectively by representatives from each International Law Firm and Khurana & Khurana, IP Attorneys, coordinated by IIPRD. Their collective decision on selection of the Winners will stand final and shall not be open to change in any manner. The Winners will be decided based on a combination of numerous factors (such as flow of the Specification, Scope covered through embodiments, Claim drafting strategy and Accurary of technical coverage).

Two Winners shall be announced from each Domain (a total of 6 Winners) on 25th September 2015, through the websites of IIPRD, K&K, and its affiliates/associate. Prize Distribution Ceremony shall take place on 8th October 2015, at the Hotel Hilton, Mumbai at 1700hrs during the Annual International Pharmaceutical/Biotech Symposium organised by IIPRD. The First Winner for each technology domain would be given a Cash Prize of Rs. One Lakh Only (Rs.100000/) and the Second Winner,a Cash Prize of Rs. Fifty Thousand Only (Rs. 50000/-). All Winners will also get a chance to attend the Symposium as Honoured Guests and will also be awarded suitable Certificates. The travel cost and stay however, shall be borne by the Winners personally. If in any case the Winners are not able to come over for the Conference and Prize Distribution Ceremony, the Winners’ Amount shall alternatively be credited to their respective Accounts.

For any of your query/question, please feel free to write to competition@iiprd.com, and/or call 0120-4296878/2342010 and speak with Ms. Meenakshi Khurana.

About the Author: Mr. ABIN SAM, interns at Khurana and Khurana, Advocates and IP Attorneys.

Applicability of the principle “Proof of the right” to Conventional application

This article relates to a recent judgment of IPAB in the case “NTT DoCoMo Inc. Vs The Controller of Patents and Designs” for a patent application No. 794/CHE/2006 which was refused to proceed further by the Indian patent office. The copy of the decision made by IPAB can be accessed here.

Brief summary of the case

In summary, the application relates toTRANSMISSION RATE CONTROL METHOD AND MOBILE STATION filed by NTT DoCoMo Inc., a Japanese company on 2nd May 2006, bearing patent application number 794/CHE/2006. The application was filed as a conventional application with priority from Japanese application No. 3.2005-134640 dated 2nd May 2005 filed at Japanese Patent Office. However,c during examination of patent application by IPO, the examiner raised an objection regarding “proof of the right should be filed” inter alia.  The appellant however failed to submit proof of the right in due time and the application got rejected by Indian patent office. The appellant being aggrieved by the rejection challenged the order given by patent office in Intellectual Property Appellate Board (IPAB). Hence this appeal was filed.

Argument advanced by the appellant

The counsel for the appellant mainly relied their contentions based on the provisions of Section 6 (Persons entitled to apply for patents), Section 7 (Form of application) and Section 135 (Convention applications) of Indian Patent Act, 1970. The counsel contended that the section 6 is applicable only in respect of ordinary application and not in conventional application. It is further contended that so far as Section 7(2) is concerned, the authority is to consider only the right of the appellant to apply and not in respect of proof of such right. Appellant also stated that as per section 135, there is no requirement of any production of proof of right for a conventional application which excludes from the application of section 6 and 7 (2).

Arguments advanced by the respondent

The Respondent argued that in addition to the lack of proof of the right, there were a number of flaws in the application. The appellant deleted the relevant column meant for conventional application in the application and also neither obtained the signature of the inventors in column 9(i) of Form-1 nor alternatively provided the assignment deed signed by the inventors assigning the invention to the appellant. Thus the appellant failed to comply with these basic stipulations for filling out Form-1 while applying for a patent, especially when the appellants had stated that they were the assignees to the patent.

Judgment

Considering the provisions of the Indian Patent Act, 1970, IPAB made it clear that section 6 deals in respect of the person entitled or competent to apply for patents. IPAB further stated that said provision cannot be confined to ordinary application but it is also applicable to the conventional application. In view of section 7(2), the IPAB further stated that if the application is made by virtue of an assignment of the right to apply for the patent for the invention, the appellant shall produce or furnish within such period as may be prescribed from the date of filing application the proof of the right to make the application. In view of section 135, IPAB held that there is no such provision discussed in said section that proof of the right shouldn’t be filed for conventional application. Further to bring out clarity, IPAB also referred section 139 which states all the provisions of the Act shall apply in relation to a conventional application and the patent granted in pursuance thereof and the person apply in relation to an ordinary application.

Thus in the light of above averments, IPAB upheld the Patent Office’s decision to reject the impugned patent application. Further, it also opined that the Controller ought to have given opportunity to the appellant for submitting an amended application as provided by Section 15 of the Patent Act instead of refusing to entertain the application. Therefore, IPAB set aside the Controller’s impugned order and remanded the matter for reconsideration giving an opportunity to the appellant to submit an amended application with the required documents.

Conclusion 

Thus it can be concluded that the decision given by IPAB is well balanced judgment where the IPAB rejected the appellant’s contention regarding non-applicability of “proof of the right” to conventional application. But at the same time IPAB referred to section 15 and opined that an opportunity in the interest of justice shall be provided to the appellant for filing an amended application with the required documents. Thus IPAB remanded the application to the Indian patent office.

About the Author: Mr Sitanshu Singh, Patent Associate at Khurana and Khurana and can be reached at: Sitanshu@khuranaandkhurana.com

IIPRD assists Venus Remedies in Successful Technology Out-licensing of Potentox to Adcock, South Africa

Venus Remedies Ltd. has successfully out-licensed its new generation antibiotic drug Potentox to Adcock Ingram Ltd. in South Africa earlier this year. Potentox is a Fixed Dose Combination (FDC) of Cefepime Hydrochloride & Amikacin Sulphate developed by Venus Remedies Ltd., indicated for treatment of Nosocomial Pneumonia & Febrile Neutropenia and available as dry powder for reconstitution before Intravenous administration. Potentox is patented drug product in South Africa and a number of countries including United States, Europe, Australia, New Zealand, Canada, Mexico, and Korea. Potentox replaces twin therapies of Cefapime and Amikacin with a single dose, administered as a single unit.

IIPRD had initiated Patent/Technology out-licensing process of Potentox and focused on the South African market following our market analysis report. A few of the reasons included a large overall systemic anti-bacterial market size of around USD 280 which grows approx. 10.5% annually, and having one of the highest reported rates of pneumococcal penicillin resistance in the world, as high as 76%. South Africa has a significantly more incidence rate for diseases such as Noscomial Pneumoina that is contracted in Hospitals. Potentox, being a first of its kind product with a synergistic effect of Cefepime & Amikacin in a single FDC, showed promise in reducing dependency on hospitals/external personnel for injecting the individual drugs.

IIPRD, as part of the exercise, focused on major players in the Antibiotics domain with specific interest in fixed dose combinations and, through Venus Remedies,shared non-confidential data relating to the product for further evaluation. Based on concrete interest levels, IIPRD then prepared the term sheet of the technology by taking inputs on valuation and proposed the same to Adcock for engagement on an exclusive marketing rights based relationship.

In general, IIPRD typically follows an effective two-step approach for Patent and IP Commercialization, wherein the first step involves comprehensive Due-Diligence and Commercial Evaluation (CE) of the Patent/Technology/Product intended to be Out-Licensed from a technology, commercial, marketability, and other parameters. This step helps IIPRD understand the market potential of the technology, competing products, pricing strategies, potential licensees, strength of Patent protection, coverage and enforceability of the concerned patent among other commercial and technical issues. Once the commercial evaluation comes out positive, IIPRD takes the technology forward through an expansive product/technology presentation to all potential licensees and how the same would add value proposition to their product portfolio. IIPRD executes this complete step on success basis and carries out all steps of commercialization including approach, proposition, evaluation, negotiation, and finalization through measured and defined strategies.

For Potentox, IIPRD followed on with the second step of identifying and approaching potential licensees. Amongst a list of companies identified and approached, we zeroed onto Adcock whichalso took a particular interest in the product and the talks were furthered and finally concluded with Venus signing an exclusive marketing alliance with Adcock. Adcock is a second-largest drug maker in South Africa and a largest supplier of hospital and critical-care products.

About IIPRD: IIPRD is a premier IP Consulting and Technology Licensing Firm with a diversified business practice providing services in the domain of IP/Patent Support Services, Legal Support, Research and Analytics, Valuation, and Commercialization/Licensing, of Intellectual Property and allied Product Level Assets along with providing complete IP and Patent Analytics and Litigation Support Services to International Corporates and Global IP Law Firms.

About Venus Remedies Ltd:  Venus Remedies Ltd. has been established in 1989. Venus is a Research & Innovation driven Pharmaceutical Manufacturing Company with an annual turnover of about $60 million. Venus has a particular focus on Critical Care Segment, in parenterals like Cephalosporins, Carbapenems and Oncology drugs in lyophilized form, infusions and small volume parenterals. Venus Remedies is among the world’s 10 leading fixed dosage injectables manufacturers. Venus has a presence in about 60 countries across the globe and covering more than 75 products, with Offices in almost all Major Geographies.

Follow us on Twitter: @KnKIPLaw.

Adams Respiratory Therapeutics, Inc. Vs. Perrigo Co.- Dispute Related to Pharmacokinetic Claim Terms

Adams Respiratory Therapeutics, Inc. Vs. Perrigo Co.- Dispute Related to Pharmacokinetic Claim Terms

Adams Respiratory Therapeutics, Inc. (Adams)-“Plaintiff” holds patent 5,372,252 (‘252 patent), which covers an extended release formulation containing guaifenesin (an expectorant used to thin, loosen, and helps expel mucus that causes congestion). Adams markets Mucinex® which is the preferred embodiment of the ’252 patent. Perrigo Co. (Perrigo)-“Defendant” sought FDA approval for a generic version of Adams’ product, Mucinex® to market 600 mg guaifenesin extended release tables, with a paragraph IV certification to the ‘252 patent. Adams sued Perrigo for infringement of claims 26, 33, 34, and 39 of the ‘252 patent. After construing the claims, the District Court granted Perrigo summary judgement of non-infringement.  But later on appeal by Adams, the Federal Circuit panel reversed the grant of summary judgement and remanded because the court based its judgment of noninfringement on an erroneous claim construction.

The claim terms in this dispute related to pharmacokinetic parameters.  Such parameters are used to characterize the rate and extent of absorption of the active pharmaceutical ingredient (API).  The primary term at issue was Cmax which indicates the maximum concentration of the API following dosing.

Basically, the dispute was over the meaning of the term “equivalent” in independent claim 24, and claims 26, 33, 34, and 39 depend on claim 24. Claim 24 recites:

24.  A modified release product having two portions, wherein a first portion comprises a first quantity of guaifenesin in an immediate release form which becomes fully bioavailable in the subject’s stomach and a second portion comprises a second quantity of guaifenesin in a sustained release form wherein the ratio of said first quantity to said second quantity provides a Cmax in a human subject equivalent to the Cmax obtained when the first of three doses of a standard immediate release formulation having one third the amount of guaifenesin is dosed every four hours over a 12 hour period and wherein said product also provides therapeutically effective bioavailability for at least twelve hours after a single dose in a human subject according to serum analysis.

 

“Equivalent Cmax”

The District Court construed “equivalent” as “within 80% to 125% of the value with which it is being compared, at a 90% confidence interval,” basing its construction on Adams’ statements during reexamination that ‘equivalent’ meant ‘the FDA bioequivalence guidelines’[i.e., the FDA’s “Approved Drug Products with Therapeutic Equivalence Evaluations,” which reflect both an 80 to 125% range and a 90% confidence interval]. But Adams argued that ‘equivalent’ meant within the 80 to 125% range, and not 90% confidence interval. Adams further stated that % confidence interval, makes sense when seeking FDA approval, but not when proving infringement.

In response to Adams statement, Perrigo argued that 80 to 125% range “means absolutely nothing in terms of establishing bioequivalence under FDA’s guidelines without the 90% confidence interval, as, among other things, it is the confidence interval itself that must fall within the 80-125% range.”

The court agreed with Adams and construed “equivalent” to require a Cmax that is 80% to 125% of the value to which it is being compared and not meant (“equivalent”), meeting all of the requirements of the FDA’s bioequivalence guidelines.

Adams compared the accused product of Perrigo to Mucinex by citing the concept of A=B=C, therefore, A=C. Adams’ argued that the accused product was bioequivalent to Mucinex, and Mucinex was bioequivalent to a standard immediate release (“IR”) product, then the accused product had a Cmax equivalent to the IR product.

Adams also presented PK and Cmax data, which made it more evident that Perrigo’s product was equivalent to Adam’s product. In this way, summary judgement for Perrigo was therefore reversed on this ground.

 

Construction of “Bioavailable”

Next, Perrigo highlighted that the claim term “Bioavailable” of the ‘252 patent is ambiguous in its meaning. Perrigo’s alternative way to seek summary judgement of noninfringement by Distirct court was also rejected by Federal circuit. The dispute revolved over the fact on whether the phrase “fully bioavailable in the subject’s stomach” meant “both release and availability in the stomach for absorption, wherever that absorption might occur.”

Perrigo did not agree on the point of infringement, that the ANDA product with IR portion of guaifenesin would become “fully bioavailable in the subject’s stomach” as claimed in claim 24 of Adams patent. Perrigo further argued stating “bioavailable” is commonly understood to mean absorption, thus requiring the guaifenesin to be absorbed in the stomach.  But as guaifenesin is primarily absorbed in the small intestine, this construction of “Bioavailable” would not suffice a finding of infringement.

In response to this, Adams pointed to the specification, which repeatedly states that the IR portion of guaifenesin is released in the stomach, but never states that it is absorbed in the stomach. The Federal circuit agreed to Adams’ consistency in using/construction of this term in the specification and denied Perrigo’s approach. The panel highlights that although the specification never expressly defines bioavailable, it uses the term when describing the availability of the drug for absorption, not the actual absorption.

 

Doctrine of Equivalents

Finally, Adams argued that Perrigo’s ANDA product would infringe the dependent claim 34 under the “doctrine of equivalents”.

Claim 34 recited:

34.  The modified release product of claim 26 [which claims the modified release product of claim 24 wherein the total quantity of guaifenesin is 600 mg] wherein the Cmax of said product is at least 1000 ng/mL and said product has an AUCinf of at least 3500 hr*ng/mL.

This appeal of Adams to show infringement under the doctrines of equivalent was agreed by the Federal Circuit panel that an amount of 3494.38 hr*ng/mL was equivalent to 3500 hr*ng/mL.

 

Conclusion:

We all know that a particular patented drug for commercialization/marketing finally needs a FDA approval to enter the medical market. Hence, according to me it is practically meaningless to specify a numerical range without a confidence interval and not importing/considering the FDA values and guidelines into the claim construction. However, I would appreciate Adams’ explanation over the numerical values of doctrines of equivalent because biologically speaking, such minor variations in pharmacokinetic parameters are practically acceptable in humans and animals.

Minusmita Ray, Patent Associate, IIPRD. Minusmita@iiprd.com

Technology Transfer Opportunities for Pharma/Biotech/Diagnostic Companies in the SME Sector

IIPRD (IIPRD) is among the leading Indian IP Consulting Firms focusing on Technology Transfer and Licensing for numerous Indian and Global Corporates and Research Institutes. IIPRD is highly active in the Technology Transfer and Licensing of Patent Backed Technologies/IP’s in the domains of Pharmaceutical, Life Sciences, Diagnostics, Telecommunications, Software and Medical Devices among others.

IKP Knowledge Park: IKP Knowledge Park (formerly known as ICICI Knowledge Park) is a non-profit Science and Technology Park based in Hyderabad, and is recognized as the premier biotech park in India. It is playing an active role in developing the biotechnology and pharmaceutical industries.

Foundation for MSME Clusters: Also known as FMC, the body is a non-profit registered Trust conceived by the Entrepreneurship Development Institute of India (EDII), Ahmedabad, India with technical support from the United Nations Industrial Development Organization’s Cluster Development Program in India. FMC strives towards making cluster initiatives inclusive with the help of a pool of distinguished national and International experts.

IIPRD is happy to announce its association with IKP Knowledge Park and The Foundation of MSME Clusters for being its Official Partner for scouting for new and innovative technologies (preferably backed by a strong Patent Portfolio) Technology Transfer opportunities for Small-Medium Size Pharmaceutical Companies. The ultimate aim is to accelerate the development of innovative companies in biotech, pharma, diagnostics and medical device areas through cluster development, technology acquisition and innovation fostering.

It is an excellent opportunity for the Indian/ Foreign companies, universities and Institutes for technology transfer/out-licensing/commercialization of their technologies in the following technology areas.

Technology Areas:

  1.  Therapeutics & vaccines in phase 1 clinical trials (infectious diseases, cancer)
  2. Biosimilars with significant data for regulatory approval (MAbs, therapeutic proteins)
  3. Point of care diagnostics that can be low priced
  4. Molecular PCR diagnostics – infectious diseases, genetic diseases
  5. ELISA based diagnostics – infectious diseases, genetic diseases
  6. Rapid diagnostics (paper strip tests)
  7. Enzymes for diagnostics biochemical tests (GOD, POD, etc)
  8. Enzymes with industrial applications
  9. Economic and green production of pharmaceutical intermediates and API’s
  10. Cardiac stents improvements, designs
  11. Inexpensive medical devices

In brief, the mandate of the exercise is to identify technologies in one or more of the above highlighted technology verticals and present them to established and interested group of In-Licensees/Buyers of the technologies. Product or process Technologies of potential out-licensees/sellers, which are either Corporates or Individuals, having adequately supporting clinical data or commercial use data relating to the respective technology, are welcome to send their technologies to us for brief evaluation post which we would be sharing these technologies with potential in-licensees/buyers in India.

The potential technologies would be showcased in January 2012 in Hyderabad and Ahmedabad, India and we therefore request all interested companies having technologies in the above mentioned categories to write to us at Dayanand@iiprd.com or iiprd@iiprd.com or contact Dayanand Reddy at 0120-2342010.

Mr. Dayanand Reddy

IIPRD

IFAIA Centre, S/20-22,
Greater Noida Shopping Plaza
UPSIDC Site – IV,
Plot No. S-7/2, Kasna Road
Greater Noida – 201 308, UP,
National Capital Region, India.

Specific Requirements:

API and intermediate production:

  1. Few intermediates which are imported from China. Indian companies are interested in cost-effective methods of manufacture that can be in-licensed. Examples: 2,4-Dichloroflurobenzene (Intermediate for Ciprofloxacin), 6 – AminoPenicilic Acid (6-APA; intermediate for Peninicillin),  Erythromycin (fermentation intermediate)Vitamin C, Difluorobenzene(Intermediate for Flucanazole).
  2. Biocatalysis for stereoselective reduction.
  3. Chiral synthesis, enzymatic stereoreduction, Novel catalysts to make process more efficient, Stoichiometric yield improvement (theoretic/atom yields).
  4. Cheaper process, green processes, more efficiency. Raw materials. Want to enter new markets-open to new APIs.
  5. Custom synthesis of Impurity/metabolite: Cost effective synthesis, novel methods of synthesis.
  6. Process improvements, Intermediate manufacture.
  7. Open to considering new synthesis pathways. Open to making new analogs of APIs.
  8. Open to new processes that are more economical. Reduction, chloromethylation and bromination green technologies, Methylation of phenols, Water based methylation using methanol and phase transfer catalysts.
  9. Ketone and amine technology for statins.

Formulations and drug delivery:

  1. NDDS, Novel formulations, production technologies (Directly Compressable Granulation technology; Dissolution Technology (key requirement))
  2. Gastric retentive technology (GRT). Transdermal patches-HRTs, hypertension. Liquid orals technologies. Solid oral- controlled release, Intra rumenal capsules. Dry powder inhalation products
  3. NDDS for asthma drugs, for respiratory delivery
  4. Mouth dissolving tablets

Biotechnology:

  1. High value, low volume.  Energy, probiotics, waste water treatment etc.
  2. Childhood vaccines/ candidates, adult vaccines, novel vaccines, novel fermentation technology, adjuvants, vaccine delivery, cold chain breaking technologies..novel formulations
  3. Want microbial identification techniques
  4. High yield vectors to produce monoclonal antibodies, better production techniques. Similar techs for biosims
  5. Most robust technological systems for manufacturing, processing and analytical advantages(HPLC, PCR, etc-fewer steps). Methods for increasing yields, or reducing down-stream processing costs. Antibodies for purification: product specific. Raw materials too high-disposable bioreactors, plastics, pipettes, etc.New vaccine candidates, novel adjuvants, novel expression systems, Bacterial or yeast expression systems for influenza antigens, HPV antigens, MAbs, etc
  6. Monoclonal antibodies-biosimiliar. Open to acquiring new area (oncology focus, TuMabs). Surface resonance frequence meters for testing Mabs.
  7. Genetically modified organism for yielding DHA, less expensive raw materials
  8. Effluent treatment.
  9. Fermentation based technologies, technologies that can improve conjugation of vaccines, anything that can increase yields, etc.better vaccines that. Better adjuvants, better stability appearance, etc
  10. Fermentation based technology for pharma – Immuno-surpressions. Seretiopeptidase, Nattokinase, Fungal-destase, acitic protease, Lectase (enzymes), Improved versions. They have 40,000 litre fermentation capacity, which is ready, which they want to use. Sub-merge biotechnology. Good vaccine technology, like polyvalent, penta-valent. They don’t want to be disease specific. Open for multiple disease areas
  11. Vertical integration. Biofuels: Jatropha seed to oil. Value added technologies. (for e.g. decrease toxicity in seed cake). Anything that adds value to any step in the biodiesel production. Any clean energy technology- algae, etc. Resin column technologies, hydrodynamic conversion, catalytic depolymerization. Nutraceuticals:  innovative herbal extraction, low- value, high value plant based products.

Diagnostics:

  1. Access to good quality MAbs. Immunoturbidometry techniques.Open to sub-licensing. Enzymes such as Glucose oxidase-GOD , peroxidise-POD, Urease, cholesterol oxidase and cholesterol esterase : can enter these verticals.
  2. R&D Equipments is a major problem, bio-equipment is a major opportunity area (No/very few people operate)…..Following areas they are interested in: Novel Rapid diagnostics technologies, markers,  Glucometer, Hb-meter, molecular diagnostics…..POCT .
  3. Better, less expensive instrumentation technologies. Enzymes for biochemical tests. Rapid test technologies-list- pregnancy then HIV, HBV, tropinin, etc. (See website of Association of Diagnostic Manufacturers of India :www.admi.org).
  4. Smart-phones: Android (google) based solutions for diagnostics…to ally with Elisa reader/spectrophotometer. MAbs for Diabetic markers (C-peptide, HA1C): CVD markers. Check with ATCC. Rapid test technologies. All hand held diagnostics
  5. Its only through innovative technologies we can penetrate the market nationally and internationally and create a brand value for ourself. Like for example you see most of the products in diagnostics sectors are not stable above say 37 °C, if we have a products which are stable at even 45 °C and above then there is huge potential. Say insulin oral delivery  again has good potential market. Biosimilars stable at 40°C might sound good.

Medical devices:

  1. Drug-delivery, elution kinetics. Novel alloys for stent systems, biocompatible material in stents. Also entering oncology drug delivery material. Stents in non-cardiac areas (peripheral stents). Self-expanding or shape memory stents.
  2. Anything that optimizes/miniaturizes the controller components or iontophoresis. Sumatriptan succinate, GNRH, etc. Formulations for transdermal patch-friendly drugs.
  3. Implant and fixator grade SS steel and titanium manufacture technologies. Forging of titanium and cobalt-chrome.
  4. Hydroxy-apatite, ceramic and other biocompatible coatings for implants
  5. Tech transfer of design.

IIPRD and Khurana & Khurana open Branch Office in Pune

Khurana & Khurana, Advocates and IP Attorneys (K&K) along with its sister concern, an  IP Consulting Firm IIPRD announce that they have opened up a branch Office in Pune in wake of the rising client requirements and towards their goal of expanding their operations across India.

K&K is one of the fastest growing full service IP Law Firms in India representing Indian and International clients ranging from small start-ups to Fortune 200 companies giving them the same experience across the board. K&K has, in it’s third year of practice, has made an entry as a Leading IP Law Firm in “Patent and Trademark Practice Areas” in Legal 500 in 2010 on the basis of the recommendations received by our esteemed Clients. K&K is now a member of APAA (Asian Patent Attorneys Association), International Trademark Association (INTA), AIPPI (International Association for the Protection of Intellectual Property) and LES (Licensing Executives Society).

IIPRD, on the other hand, has emerged as a premier Intellectual Property Consulting and Commercialization/Licensing Firm with a diversified business practice providing services in the domain of Commercialization, Valuation, Licensing, Transfer of Technology and Due-Diligence of Intellectual Property Assets along with providing complete IP and Patent Analytics and Litigation Support Services to International Corporates and Global IP Law Firms.

Pune Branch Office Address:

D-1, HDFC Colony,
Pimpri-Chinchwad,
Mumbai-Pune Road,
PUNE, Maharashtra, India

Due Diligence Search Strategies for Determining Patentability of Exemplary Indian Patent Applications

When Patent experts advise to Large and Small Corporations and Institutes to focus on Due-Diligence before filing patent application, it’s not without any substantive motive. What is the point of having a patent, even though it gets a grant, if the same is not enforceable? It’s almost like having a piece of paper with no economic and commercial viability. Its known that almost 40% of the total number of patents granted in US are challenged on validity at some point or the other of their legal life. With the increasing load of the respective country’s patent offices, an increasing percentage of such patents being challenged are actually held invalid. This leaves the patent owner with the complete risk and responsibility to ensure that a thorough search is conducted prior to any processing of preparation and filing of a Patent Application.

In the Indian context, even though pre-grant oppositions are not a very common phenomenon right now and are typically restricted to the pharmaceutical sector, mostly because of legacy and “react when you get hit mentality”, the time is not far when Corporates realize the importance that a granted patent could have on the business execution. Such patent might not stop the complete business functioning of a Corporate but sure can make a small dent by a legal suit followed by certain damages or injunctions. Why not take an easier route and be diligent in filing a pre-grant opposition as a proactive step and negate th patent itself in the first place. Any Person, according to section 25 of Indian Patents act, 1970, can apply for a Pre-grant opposition for a published patent application in India.  In the recent past, Potential people (including Potential Infringers!) can file an Pre-grant Opposition under Section 25(1) in the Indian Patent Office against this concerned Patent Application by presenting relevant prior arts/documents based on which this patent can be rendered non-novel/obvious and hence non-patentable. This pre-grant opposition needs to be filed before the grant of this Indian Patent Application.

This article is merely an effort and initiative from IIPRD to randomly pick up recently published Indian patent application and try and understand the chances of getting a valid patent. IIPRD made note of an Indian Patent Application, which has been recently been published in the Indian Patent Journal, relating to a web guide and particularly to a method and system for dynamically presenting a website.

In summary, the patent disclosure relates to a user specifying his initial interests which are collected to generate a preference profile for the website. Given the preference profile, a web guide automatically restructures the website presentation in such a way that the website looks as if it has been ‘made for me’. That is, the presentation of the website is personalized for the user. Unlike conventional personalization which only allows the user to select a background, font color, and other limited choices, the web guide leads navigation of the website. That is, the web guide synchronizes the displayed web content (data, information, etc.) with the specified interests of the user. The web guide further provides the user with queries and prompts based on the user’s preferences, and the returned content is subsequently used to further guide the user in his navigation. These queries and prompts are designed to follow the logic of a human tour guide. That is, the queries and prompts of the web guide focus further searching by providing guidance that is related to the preferences already expressed by the user and thus more likely to be relevant to the user.

The Applicant is intended to claim the following:

1. A server comprising:
computer executable instructions configured to:
present an initial home page, the initial home page including initial preference options;
receive initial preference option data corresponding to the initial preference options;
retrieve select first data based on the initial preference option data; and
structure a first presentation of a website based on the select first data, the first presentation including a closed set of subsequent preference options based on the select first data.

Based on quick due diligence, IIPRD identified few prior arts that can be considered material for invalidation on the present patent application. The prior arts include US Patent publication no. 2008/0209336, US Patent No. 7,353,460 and US Patent No. 7,743,334.

Discussing further, part of claim mapping is cited below for the first prior art.

Claim 1 of Patent Application
Cited Portions of Prior art(US7,743,334)
A server comprising computer executable instructions configured to: A method for dynamically adding and removing elements from a web-application list module in a web server, comprising: (Independent Claim 5)
present an initial home page, the initial home page including initial preference options; providing a web page with a set of configurable elements to be viewed by a user; using an iFrame element to display content of the web page;
retrieve select first data based on the initial preference option data; and receiving at least one of a user preference into an edit box with a button within an initial display of the web page to add a configurable element and the user preference at the initial display of the web page to remove the configurable element;
structure a first presentation of a website based on the select first data, the first presentation including a closed set of subsequent preference options based on the select first data. communicating with another computing device using XMLHTTP to obtain one or more data in response to the user preference to add or remove the configurable element; (Independent Claim 5).

It is further to be noted that there are many valid grounds to reject a patent under section 25 of Indian Patents act, 1970.  Few Important grounds are stated here:

Important Grounds under Opposition to grant of patent:

Section 25 (1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground –

(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim

(i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or

(ii) in India or elsewhere, in any other document; provided that the  ground specified  in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue if sub-section (2) or sub-Section(3) of Section 29;

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

Pre-grant Opposition under Section 25(1) (b) (i) and under Section 25 (1) (e) under the grounds that the patent publication in light of the above cited prior art(s) can be rendered non-novel/obvious and hence non-patentable.

We believe that it is the right time to conduct a comprehensive due-diligence to understand the type of patents being filed currently by Indian and International Corporates, analyze the scope of protection that might be accorded from a functional and structure/construction perspective, and also assess the manner in which they might later impact the products/services being launched by Corporates and specially start-ups in the same domain.

Please note that the above analysis and the opinion presented are solely performed by IIPRD professionals and the views are solely their own and not be relied and intended to be legal advice about particular problems and. Corporates who are interested in filing a pre-grant oppositions are advised to carry out further due diligence for the same. For any comments or queries, please mail us to iiprd@iiprd.com.

Author – Veera Raghavan Rajendran,

Patent Specialist, IIPRD.

The Author of the Blog can be reached: Raghavan@iiprd.com.